EXHIBIT 10.9
INTELLECTUAL PROPERTY SECURITY AGREEMENT
THIS INTELLECTUAL PROPERTY SECURITY AGREEMENT (this "SECURITY
AGREEMENT") dated as of December 9, 2004, is made by EASYLINK SERVICES
CORPORATION, a Delaware corporation ("ASSIGNOR"), in favor of XXXXX FARGO
FOOTHILL, INC., a California corporation (together with its successors and
assigns, "ASSIGNEE").
W I T N E S S E T H:
WHEREAS, Assignor and certain of its Subsidiaries (each a "BORROWER"
and collectively, the "BORROWERS") and Assignee are parties to that certain
Credit Agreement of even date herewith (as the same may be amended, supplemented
or modified from time to time, the "CREDIT AGREEMENT"), which provides for
Assignee to make certain loans to Borrowers.
NOW, THEREFORE, in consideration of the premises set forth herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Assignor (intending to be legally bound hereby) agrees
as follows:
1. Incorporation of Credit Agreement. The Credit Agreement and
the terms and provisions thereof are hereby incorporated herein in
their entirety by this reference thereto. All terms capitalized but not
otherwise defined herein shall have the same meanings herein as in the
Credit Agreement.
2. Security Interest in Intellectual Property. To secure the
complete satisfaction and payment when due or declared due of all
Obligations (as defined in the Credit Agreement), Assignor hereby
grants to Assignee, for the benefit of the Assignee and the Bank
Product Providers, a first priority perfected security interest and
lien having priority over all other security interests and liens, with
power of sale, upon the occurrence of an Event of Default (as defined
in the Credit Agreement), all of Assignor's right, title and interest
in and to all of the following now owned and existing and hereafter
arising, created or acquired property (collectively, the "INTELLECTUAL
PROPERTY"):
(i) patents and patent applications, including, without limitation, the
inventions and improvements described and claimed therein, and those patents
listed on Exhibit A attached hereto and hereby made a part hereof, and (a) all
reissues, divisions, continuations, renewals, extensions and
continuations-in-part thereof, (b) all income, royalties, damages, proceeds and
payments now and hereafter due or payable under or with respect thereto,
including, without limitation, damages and payments for past or future
infringements thereof, (c) the right to xxx for past, present and future
infringements thereof, and (d) all rights corresponding thereto throughout the
world (all of the foregoing patents and applications, together with the items
described in clauses (a)-(d) of this subsection 2(i), are sometimes hereinafter
referred to individually as a "PATENT" and, collectively, as the "PATENTS");
(ii) trademarks, trademark registrations, trademark applications, trade
names and tradestyles, brand names, service marks, service xxxx registrations
and service xxxx applications, including, without limitation, the trademarks,
trade names, brand names, service marks and applications and registrations
thereof listed on Exhibit B attached hereto and hereby made a part hereof, and
(a) all renewals or extensions thereof, (b) all income, royalties, proceeds,
damages and payments now and hereafter due or payable with respect thereto,
including, without limitation, damages and payments for past or future
infringements thereof, (c) the right to xxx for past, present and future
infringements thereof, and (d) all rights corresponding thereto throughout the
world (all of the foregoing trademarks, trade names and tradestyles, brand
names, service marks and applications and registrations thereof, together with
the items described in clauses (a)-(d) of this subsection 2(ii), are sometimes
hereinafter referred to individually as a "TRADEMARK" and, collectively, as the
"TRADEMARKS");
(iii) rights under or interests in any patent, trademark, or copyright
license agreements with any other Person (to the extent such license agreements
may be assigned without violating the terms of any such license agreement;
provided that each such license agreement shall be deemed automatically assigned
to Assignee as security and Assignor shall execute any and all documents that
Assignee may from time to time request relating thereto at such time as any such
restriction shall no longer be applicable) with respect to any of the
Intellectual Property or any other patent, trademark, service xxxx or any
application or registration thereof or any other trade name or tradestyle
between Assignor and any other Person, whether Assignor is a licensor or
licensee under any such license agreement, including, without limitation, the
licenses listed on Exhibit C attached hereto and hereby made a part hereof (all
of the foregoing license agreements and Assignor's rights thereunder are
referred to collectively as the "LICENSES");
(iv) the goodwill of Assignor's business connected with and symbolized
by the Trademarks;
(v) copyrights, copyright registrations and copyright applications,
used in the United States and elsewhere, including, without limitation, the
copyright registrations and copyright applications listed on Exhibit D attached
hereto and made a part hereof, and (a) renewals or extensions thereof, (b) all
income, royalties, proceeds, damages and payments now and hereafter due and/or
payable with respect thereto, including, without limitation, damages and
payments for past or future infringements thereof, (c) the right to xxx for
past, present and future infringements thereof, and (d) all rights corresponding
thereto throughout the world (all of the foregoing copyrights, copyright
registrations and copyright applications, together with the items described in
clauses (a)-(d), are sometimes hereinafter individually and/or collectively
referred to as the "COPYRIGHTS"); and
(vi) all trade secrets, formulas, processes, devices, know-how, or
compilations of information (including technical information and non-technical
information such as customer lists and marketing plans), collectively referred
to as trade secrets, which are not available to others and which are maintained
as confidential by Assignor, and the right to prevent misappropriation and
unauthorized disclosures thereof and all rights corresponding thereto throughout
the world (all of the foregoing trade secrets and associated rights are
sometimes hereinafter individually and/or collectively referred to as the "TRADE
SECRETS").
3. Representations and Warranties. Assignor hereby represents
and warrants to Assignee for the benefit of the Assignee and the Bank
Product Providers, which representations and warranties shall survive
the execution and delivery of this Security Agreement, that:
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(i) None of the Intellectual Property material to the Assignor's
business has been adjudged invalid or unenforceable nor has any such
Intellectual Property been cancelled, in whole or in part, and each such
Intellectual Property is presently subsisting;
(ii) None of the Intellectual Property material to the Assignor's
business infringes upon the rights or property of any other Person or is
currently being challenged in any way, and there are no pending or, to the
knowledge of the Assignor, threatened claims, litigation, proceedings or other
investigations regarding any of the Intellectual Property;
(iii) Each of the Intellectual Property material to the Assignor's
business is valid and enforceable, and the Assignor has adopted adequate
precautions to protect its Trade Secrets from unauthorized or accidental
disclosure;
(iv) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to the Intellectual Property
material to the Assignor's business, free and clear of any liens, security
interests, mortgages, charges and encumbrances, including, without limitation,
licenses, consent-to-use agreements, shop rights and covenants by Assignor not
to xxx third Persons;
(v) Assignor has adopted, used and is currently using all of the
Trademarks, and Assignor's use thereof does not infringe the intellectual
property rights of any person or entity;
(vi) Assignor has no notice or knowledge of any suits or actions
commenced or threatened with reference to or in connection with any of the
Intellectual Property material to the Assignor's business;
(vii) Assignor has the unqualified right to execute and deliver this
Security Agreement and perform its terms, this Security Agreement has been
executed and delivered by a duly authorized officer of Assignor, and this
Security Agreement is a legally enforceable obligation of Assignor;
(viii) No trademark opposition or cancellation proceedings have ever
been filed with the United States Patent and Trademark Office against any of the
Trademarks; and
(ix) The Licenses, complete copies of which have been provided to
Assignor, are valid and binding agreements, enforceable in accordance with their
terms (subject, as to the enforcement of remedies, to applicable bankruptcy,
reorganization, insolvency and similar laws from time to time in effect). Each
of the Licenses is in full force and effect and has not been amended or
abrogated and there is no default under any of the Licenses.
4. Restrictions on Future Agreements. Assignor agrees that
until all Obligations shall have been satisfied and paid in full and
the Credit Agreement shall have been terminated, Assignor shall not,
without the prior written consent of Assignee, sell, transfer,
mortgage, convey, dispose, encumber or assign any or all of, or grant
any license or sublicense under (other than non-exclusive licenses in
the ordinary course of business), the Intellectual Property, or enter
into any other agreement with respect to the Intellectual Property, and
Assignor further agrees that it shall not take any action or permit any
action to be taken by others subject to its control, including, without
limitation, licensees or sublicensees, or fail to take any action,
which would adversely affect the validity or enforcement of the rights
provided or transferred to Assignee under this Security Agreement.
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5. New Intellectual Property. Assignor hereby represents and
warrants to Assignee for the benefit of the Assignee and the Bank
Product Providers that the Intellectual Property listed on Exhibits A,
B, C, and D, respectively, constitute all of the Intellectual Property
material to the Assignor's business and now owned by Assignor. If,
before all Obligations shall have been satisfied in full or before the
Credit Agreement has been terminated, Assignor shall (i) become aware
of any existing Intellectual Property material to the Assignor's
business of which Assignor has not previously informed Assignee, (ii)
obtain rights to any new patentable inventions or other Intellectual
Property material to the Assignor's business, or (iii) become entitled
to the benefit of any Intellectual Property material to the Assignor's
business which benefit is not in existence on the date hereof, the
provisions of this Security Agreement above shall automatically apply
thereto and Assignor shall give to Assignee prompt written notice
thereof. Assignor hereby authorizes Assignee to modify this Security
Agreement by amending Exhibits A, B, C, and D, as applicable, to
include any such Intellectual Property, and to file or refile this
Security Agreement with the U.S Patent and Trademark Office and U.S.
Copyright Office. Assignor agrees to execute and deliver any and all
documents and instruments necessary or advisable to record or preserve
Assignee's interest in all Intellectual Property added to Exhibits A,
B, C, and D pursuant to this Section.
6. Royalties; Terms; Rights Upon Default. The term of this
Security Agreement shall extend until the earlier of (i) the expiration
of all of the respective Intellectual Property collaterally assigned
hereunder, and (ii) the indefeasible payment in full of all Obligations
and the termination of the Credit Agreement. Assignor agrees that upon
the occurrence and during the continuance of an Event of Default, the
use by Assignee for the benefit of the Assignee and the Bank Product
Providers of all Intellectual Property shall be worldwide and as
extensive as the rights of Assignor to use such Intellectual Property,
and without any liability for royalties or other related charges from
Assignee or the Bank Product Providers to Assignor. Upon the occurrence
and during the continuance of any Event of Default, Assignor hereby
authorizes: (a) the Commissioner of Patents and Trademarks, United
States Patent and Trademark Office (or as appropriate, such equivalent
agency in foreign countries), to issue any and all Patents to Assignee
for the benefit of the Assignee and the Bank Product Providers as
assignee of Assignor's entire interest therein; (b) the Register of
Copyrights, United States Copyright Office (or as appropriate, such
equivalent agency in foreign countries), to issue any and all
certificates of registration or renewal for all of the Copyrights to
Assignee for the benefit of the Assignee and the Bank Product Providers
as assignee of Assignor's entire interest therein; and (c) the
Commissioner of Patents and Trademarks, United States Patent and
Trademark Office (or as appropriate, such equivalent agency in foreign
countries) to issue any and all certificates of registration or renewal
for all of the Trademarks to Assignee for the benefit of the Assignee
and the Bank Product Providers as assignee of Assignor's entire
interest therein and in the goodwill of Assignor's business connected
therewith and symbolized thereby.
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7. Assignee's Right to Inspect; Trademark Quality Control.
Assignee shall have the right, at any time and from time to time with
prior notice (unless an Event of Default has occurred and is
continuing, in which case prior notice shall not be required) and,
during normal business hours and prior to payment in full of all
Obligations and termination of the Credit Agreement, to inspect
Assignor's premises and to examine Assignor's books, records and
operations, including, without limitation, Assignor's quality control
processes. Assignor agrees (i) to maintain the quality of any and all
products in connection with which the Trademarks are used, consistent
with the quality of said products as of the date hereof and (ii) to
provide Assignee, upon Assignee's reasonable request from time to time,
with a certificate of an officer of Assignor certifying Assignor's
compliance with the foregoing. Upon the occurrence and during the
continuance of an Event of Default, Assignor agrees that Assignee, or a
conservator appointed by Assignee, shall have the right to establish
such additional product quality controls as Assignee, or said
conservator, in its sole judgment, may deem necessary to assure
maintenance of the quality of products sold by Assignor under the
Trademarks. The foregoing notwithstanding, unless and until an Event of
Default shall have occurred, Assignee agrees to hold confidential and
not disclose or use any non-public information regarding any Patent,
Trademark or License unless such disclosure is required by applicable
law or court order. This obligation shall survive the termination of
this Agreement, the release of the security interest herein and such
reassignment of the Intellectual Property, as applicable, unless such
termination is due to an Event of Default.
8. Release of Security Agreement. Upon the payment and
performance in full in cash of the Obligations, including the cash
collateralization, expiration or cancellation of all Obligations, if
any, consisting of letters of credit, and the full and final
termination of any commitment to extend any financial accommodations
under the Credit Agreement, this Security Agreement shall terminate,
and Assignee shall execute and deliver such documents and instruments
and take such further action reasonably requested by Assignor, at
Assignor's expense, as shall be necessary to evidence termination of
the security interest granted by Assignor to Assignee for the benefit
of the Assignee and the Bank Product Providers hereunder.
9. Intentionally Omitted.
10. Duties of Assignor. Assignor shall have the duty to the
extent commercially reasonable and in Assignor's good faith business
judgment: (i) to file and prosecute diligently any patent, trademark or
service xxxx applications pending as of the date hereof or hereafter
until all Obligations shall have been paid in full and the Credit
Agreement has been terminated, (ii) to make application on unpatented
but patentable inventions and on trademarks and service marks, (iii) to
preserve and maintain all rights in the Intellectual Property
(including, but not limited to, with respect to Trademarks, the filing
of affidavits of use and, incontestability, where applicable, under
ss.ss.8 and 15 of the Xxxxxx Act (15 U.S.C. ss. 1058, 1065) and
renewals and, to the extent commercially reasonable, initiating
opposition or cancellation proceedings or litigation against users of
the same or confusingly similar marks who seriously threaten the
validity or rights of Assignor in its Trademarks), and (iv) to ensure
that the Intellectual Property is and remains enforceable. Any and all
costs and expenses incurred in connection with Assignor's obligations
under this Section 10 shall be borne by Assignor. Assignor shall not
knowingly or unreasonably abandon any right to file a patent, trademark
or service xxxx application, or abandon any pending patent application,
or any other Intellectual Property, without the prior written consent
of Assignee.
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11. Assignee's Right to Xxx. After an Event of Default,
Assignee for the benefit of the Assignee and the Bank Product Providers
shall have the right, but shall in no way be obligated, to bring suit
in its own name to enforce the Intellectual Property, and, if Assignee
shall commence any such suit, Assignor shall, at the request of
Assignee, do any and all lawful acts and execute any and all proper
documents and instruments reasonably required by Assignee for the
benefit of the Assignee and the Bank Product Providers in aid of such
enforcement and Assignor shall promptly, upon demand, reimburse and
indemnify Assignee for all costs and expenses (including, without
limitation, reasonable attorneys' fees) incurred by Assignee (for the
benefit of the Assignee and the Bank Product Providers) in the exercise
of its rights under this Section 11.
12. Waivers. No course of dealing between Assignor and
Assignee, nor any failure to exercise, nor any delay in exercising, on
the part of Assignee, any right, power or privilege hereunder or under
the Credit Agreement shall operate as a waiver thereof; nor shall any
single or partial exercise of any right, power or privilege hereunder
or thereunder preclude any other or further exercise thereof or the
exercise of any other right, power or privilege.
13. Severability. The provisions of this Security Agreement
are severable, and if any clause or provision shall be held invalid and
unenforceable in whole or in part in any jurisdiction, then such
invalidity or unenforceability shall affect only such clause or
provision, or part thereof, in such jurisdiction, and shall not in any
manner affect such clause or provision in any other jurisdiction, or
any other clause or provision of this Security Agreement in any
jurisdiction.
14. Modification. This Security Agreement cannot be altered,
amended or modified in any way, except as specifically provided in
Section 5 hereof or by a writing signed by the Assignor and the
Assignee.
15. Cumulative Remedies; Power of Attorney; Effect on Credit
Agreement. All of Assignee's rights and remedies with respect to the
Intellectual Property (for the benefit of the Assignee and the Bank
Product Providers), whether established hereby or by the Credit
Agreement, or by any other agreements or by law shall be cumulative and
may be exercised singularly or concurrently. Assignor hereby authorizes
Assignee for the benefit of the Assignee and the Bank Product Providers
upon the occurrence of an Event of Default, to make, constitute and
appoint any officer or agent of Assignee as Assignee may select, in its
sole discretion, as Assignor's true and lawful attorney-in-fact, with
power to, for the benefit of the Assignee and the Bank Product
Providers, (i) endorse Assignor's name on all applications, documents,
papers and instruments necessary or desirable for Assignee in the use
of the Intellectual Property, or (ii) take any other actions with
respect to the Intellectual Property as Assignee deems to be in the
best interest of Assignee, or (iii) grant or issue any exclusive or
non-exclusive license under the Intellectual Property to any person or
entity, or (iv) assign, pledge, sell, convey or otherwise transfer
title in or dispose of any of the Intellectual Property to any person
or entity. Assignor hereby ratifies all that such attorney shall
lawfully do or cause to be done by virtue hereof. This power of
attorney being coupled with an interest shall be irrevocable until all
Obligations shall have been paid in full and the Credit Agreement has
been terminated. Assignor acknowledges and agrees that this Security
Agreement is not intended to limit or restrict in any way the rights
and remedies of Assignee under the Credit Agreement but rather is
intended to facilitate the exercise of such rights and remedies.
Assignee shall have, in addition to all other rights and remedies given
it by the terms of this Security Agreement and the Credit Agreement,
all rights and remedies allowed by law, in equity, and the rights and
remedies of a secured party under the Uniform Commercial Code as
enacted in New York.
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16. Indemnification. Assignor hereby agrees to and shall
defend, indemnify, save, and hold Assignee and the Bank Product
Providers and each of their respective officers, directors, employees,
affiliates, and agents harmless from and against: (a) all obligations,
demands, claims, and liabilities claimed or asserted by any person or
entity arising out of or relating to this Security Agreement or the
transactions contemplated hereby, and (b) all costs, expenses, charges,
penalties, damages, and losses (including, without limitation,
reasonable attorneys' fees and out-of-pocket costs and expenses) in any
way suffered, incurred, or paid by Assignee (on behalf of the Assignee
and/or the Bank Product Providers) as a result of or in any way arising
out of, following, or consequential to this Security Agreement or the
transactions contemplated hereby, except for any demands, claims,
liabilities and losses suffered or incurred by Assignee or any Bank
Product Provider because of its willful misconduct or gross negligence.
The indemnification obligations of Assignor provided hereby shall
survive the termination of this Security Agreement and the Credit
Agreement.
17. Binding Effect; Benefits. This Security Agreement shall be
binding upon Assignor and its respective successors and assigns, and
shall inure to the benefit of Assignee, its successors, nominees and
assigns; provided, however, Assignor shall not assign this Security
Agreement or any of Assignor's obligations hereunder without the prior
written consent of Assignee.
18. Governing Law. This Security Agreement shall be governed
by, enforced and construed in accordance with the internal laws of the
State of New York, without regard to choice of law or conflict of law
principles.
19. Headings; Counterparts. Paragraph headings used herein are
for convenience only and shall not modify the provisions which they
precede. This Security Agreement may be signed in one or more
counterparts, but all of such counterparts shall constitute and be
deemed to be one and the same instrument. Any fax signature shall be
deemed to be as legally enforceable and effective as a signed original.
20. Further Assurances. Assignor agrees to execute and deliver
such further agreements, instruments and documents, and to perform such
further acts, as Assignee shall reasonably request from time to time in
order to carry out the purpose of this Security Agreement and
agreements set forth herein. Assignor acknowledges that a copy of this
Security Agreement will be filed by the Assignee with the United States
Patent and Trademark Office and, if applicable, the United States
Copyright Office, at the sole cost and expense of Assignor.
21. Intentionally Omitted.
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22. Foreign Patents, Copyrights and Trademarks. Upon the
request of Assignee at any time or from time to time, and at the sole
cost and expense (including, without limitation, reasonable attorneys'
fees) of Assignor, Assignor shall take all actions and execute and
deliver any and all instruments, agreements, assignments, certificates
and/or documents, reasonably required by Assignee to collaterally
assign any and all of Assignor's foreign patent, copyright and
trademark registrations and applications now owned or hereafter
acquired to and in favor of Assignee. Upon the execution and delivery
of any such collateral assignments or documents, the terms "Patents",
"Copyrights", and "Trademarks" as used herein shall automatically be
deemed amended to include such foreign patent, copyright and trademark
registrations and applications without any action required by any
person or entity.
23. VENUE: JURY TRIAL WAIVER. (a) THE PARTIES AGREE THAT ALL
ACTIONS OR PROCEEDINGS ARISING IN CONNECTION WITH THIS SECURITY
AGREEMENT SHALL BE TRIED AND LITIGATED ONLY IN A COURT OF COMPETENT
JURISDICTION LOCATED IN THE CITY OF NEW YORK, BOROUGH OF MANHATTAN, OR,
AT THE SOLE OPTION OF ASSIGNEE, IN ANY OTHER COURT IN WHICH ASSIGNEE
SHALL INITIATE LEGAL OR EQUITABLE PROCEEDINGS AND WHICH HAS SUBJECT
MATTER JURISDICTION OVER THE MATTER IN CONTROVERSY.
(b) TO THE FULLEST EXTENT PERMITTED BY LAW, AND AS SEPARATELY BARGAINED
FOR CONSIDERATION TO ASSIGNEE, ASSIGNOR HEREBY WAIVES ANY RIGHT TO TRIAL BY JURY
(WHICH ASSIGNEE ALSO WAIVES) IN ANY ACTION, SUIT, PROCEEDING OR COUNTERCLAIM OF
ANY KIND ARISING OUT OF OR OTHERWISE RELATING TO THIS SECURITY AGREEMENT.
ASSIGNOR HEREBY EXPRESSLY ACKNOWLEDGES THE INCLUSION OF THIS JURY TRIAL WAIVER
AND ACKNOWLEDGES THAT IT HAS HAD THE OPPORTUNITY TO CONSULT WITH INDEPENDENT
LEGAL COUNSEL REGARDING ITS MEANING.
[Signature Page Follows]
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IN WITNESS WHEREOF, Assignor has duly executed this Intellectual
Property Security Agreement in favor of Assignee, as of the date first written
above.
EASYLINK SERVICES CORPORATION
ATTEST: By: s/Xxxxxx X. Xxxxxxxx
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Name: Xxxxxx X. Xxxxxxxx
By: s/Xxxxx Xxxxxxxx Its: President & Chief Executive Officer
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Name: Xxxxx Xxxxxxxx
Its: Secretary
Agreed and Accepted as of this
9th, day of December, 2004
XXXXX FARGO FOOTHILL, INC.
By: s/Xxxxx Xxxx
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Name: Xxxxx Xxxx
Its: Vice President
